Claim Construction Arguments in Appeal Forfeited if Not Raised Before the Board

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In In re: Google Technology Holdings LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), the Federal Circuit elaborated on the policies underlying waiver and forfeiture of appellate arguments.  Ultimately, the court affirmed the Patent Trial and Appeal Board’s (“the Board”) obviousness rejections of the claims at issue because Google had forfeited the arguments it raised on appeal.

Google’s Patent Application No. 15/179,765 is directed to distributed caching for video-on-demand systems.  The examiner rejected the claims as obvious in view of several prior art references.  Google appealed the final rejection to the Board.  The Board was unpersuaded and affirmed the examiner’s obviousness rejections.

On appeal to the Federal Circuit, Google argued that the Board had erred because it misconstrued certain claim terms.  The Federal Circuit took issue that Google had never presented these construction arguments to the Board.  Therefore, Google had forfeited those arguments.

The Federal Circuit noted that waiver is often used to refer to both waiver and forfeiture by the courts—including its own cases—but the rules and concepts behind the separate terms are well established.  Waiver is the “intentional relinquishment or abandonment of a known right.”  Forfeiture is the “failure to make the timely assertion of a right.”

Forfeited arguments are not considered on appeal in the absence of exceptional circumstances, and such circumstances were not present in this case.  The court noted that by failing to present the arguments to the Board, Google deprived an expert body of its important role in reviewing patent application rejections.  Similarly, consideration of new arguments was not consistent with the Federal Circuit’s place as an appellate court, one charged with reviewing the Board’s decisions, not considering them in the first instance.  Furthermore, considering new arguments raised on appeal would encourage sandbagging by others attempting to gain a strategic advantage.

After determining that Google’s arguments before the Board could not be read to raise the arguments presented in the appeal, the court declined to address the merits of Google’s proposed claim constructions.  The Board’s rejections of the claims was affirmed.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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